Lynchs Tullamore Brew - 247977

Date19 August 2015
Administrative Decision Number247977
opponentWilliam Grant & Sons Irish Brands Limited
SectionTrade Marks Act, 1996 - 2008-2017
1
DECISION OF THE CONTROLLER OF PATENTS, DESIGNS AND TRADE MARKS IN
PROCEEDINGS UNDER THE TRADE MARKS ACT, 1996
In the matter of an application for registration of Trade Mark No. 247977 and in the matter of an
Opposition thereto.
EMMET LYNCH Applicant
WILLIAM GRANT & SONS IRISH BRANDS LIMITED Opponent
(Represented by FRKelly)
The Application
1. On 5 April, 2012, Emmet Lynch, of Kilbride Street, Tullamore, Co. Offaly, Ireland made
application (No. 2012/00606) under Section 37 of the Trade Marks Act, 1996 (“the Act”) to
register the terms “LYNCH’S TULLAMORE BREW” and “LYNCHS TULLAMORE
BREW” as a series of 2 trade marks in respect of Beers; stout, ale, lager, porter, pills and
shandy in Class 32. For simplicity sake I shall refer hereafter to both marks as “LYNCH’S
TULLAMORE BREW”.
2. The application was accepted for registration and advertised accordingly under No. 247977 in
Journal No. 2218 dated 19 December, 2012.
3. Notice of Opposition to the registration of the marks pursuant to Section 43 of the Act was
filed on 15 March, 2013 by William Grant & Sons Irish Brands Limited (hereinafter referred
to as “WGSIBL”)“, an Irish company, of 4th Floor, Block D, Iveagh Court, Harcourt Road,
Dublin 2, Ireland. The Applicant filed a counter-statement on 19 June, 2013 and evidence
was, in due course, filed by the parties under Rules 20, 21 and 22 of the Trade Marks Rules,
1996 (“the Rules”).
4. Both parties filed written submissions in lieu of attending a hearing in the matter, and both
parties filed written submissions in reply to the other party’s submissions. Acting for the
Controller, I decided to dismiss the opposition and to allow the application to proceed to
registration. I now state the grounds of my decision and the materials used in arriving thereat
in response to a request by the Opponent in that regard pursuant to Rule 27(2) of the Trade
Mark Rules 1996.
2
Grounds of the Opposition
5. In its Notice of Opposition the Opponent refers to its proprietorship of Irish Trade Mark
TULLAMORE DEW, registered under No. 40514 as of 18 September, 1945 in respect of
Whiskey blended in Ireland in Class 33, and of its identical Community Trade Mark No.
4525499, with a date of registration of 3 July, 2006 in respect of Alcoholic beverages (except
beers)”, also in Class 33. The Opponent then raises objection to the present application under
Sections 6, 8, 10 and 37 of the Act, which I shall summarise as follows:
- Section 6(1) - the mark does not fall within the definition of a trade mark;
- Section 8(1)(b) the mark is devoid of any distinctive character;
- Section 8(1)(c) the mark consists exclusively of signs or indications which may
designate characteristics of the goods;
- Section 8(4)(a) use of mark is prohibited by enactment or rule of law;
- Section 10(2)(b) likelihood of confusion on the part of the public, and likelihood of
association with the Opponent’s TULLAMORE DEW mark;
- Section 10(3) use of mark would take unfair advantage of, or be detrimental to,
distinctive character or reputation of the Opponent’s mark;
- Section 10(4)(a) use of the mark is liable to be prevented by virtue of the law of passing
off;
- Section 37 the Applicant is not using the mark applied for, nor does he have a bona fide
intention to use the mark.
In its Notice of Opposition the Opponent also claims the mark applied for is contrary to
Council Directive No. 89/104 EEC to approximate the laws of the Member states relating to
trade marks and that the application should be refused in accordance with the judgement
and/or discretion of the Controller.
Counter-Statement
6. In its Counter-Statement the Applicant denies all the grounds of opposition and only admits
that the Opponent is the registered proprietor of the marks cited in the Opponent’s Notice of
Opposition. The Applicant calls on the Opponent to provide proof of its claimed extensive
use of its trade mark TULLAMORE DEW and to provide evidence to support all the grounds
upon which the opposition is based.

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